WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

A.G. BARR PLC v. Anthony Stewart

Case No. D2016-1407

1. The Parties

The Complainant is A.G. BARR PLC of Cumbernauld, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Demys Limited, United Kingdom.

The Respondent is Anthony Stewart of Gourock, United Kingdom, self-represented.

2. The Domain Name and Registrar

The disputed domain name <irn-bru.com> (the "Domain Name") is registered with Moniker Online Services, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 11, 2016. On July 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 12, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2016. Upon the Respondent's request of August 2, 2016, the Notification of Complaint of July 14, 2016 was forwarded to additional contact details for the Respondent on the same day, and the Response due date was extended to August 7, 2016 under paragraph 5(b) of the Rules. The Response was filed with the Center on August 6, 2016.

The Center appointed David Taylor as the sole panelist in this matter on August 18, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a soft drink manufacturer based in Cumbernauld, Scotland, United Kingdom, founded in 1875. The Complainant's IRN-BRU brand is widely known throughout the United Kingdom and the world in connection with a carbonated soft drink. The Complainant maintains a large number of registered trade marks in many jurisdictions relating to its IRN-BRU brand, including United Kingdom trade mark No. 649974 (registered on July 18, 1946) and European Union trade mark No.1428333 (registered on March 21, 2001). Its official website is available at the URL "www.irn-bru.co.uk" (the domain name <irn-bru.co.uk> was registered before August 1996).

The Respondent is an individual based in Gourock, Scotland, United Kingdom. The Domain Name was registered by the Respondent on February 11, 1998. It does not resolve to an active website.

The Respondent applied for a trade mark for the term "irn-bru" in class 15 for musical instruments (United Kingdom trade mark No. 3146911) on January 29, 2016 but withdrew it on June 23, 2016.

5. Parties' Contentions

A. Complainant

The Complainant contends that IRN-BRU is one of the United Kingdom's bestselling carbonated soft drinks and is very well known throughout the United Kingdom and the world. The Complainant further states that IRN-BRU has been described as "Scotland's other national drink" (after whisky). The Complainant explains that IRN-BRU was originally launched in 1901 as IRON BREW, but that proposed changes to food labelling regulations after the Second World War led the Complainant to rebranding its product as IRN-BRU in 1946. The Complainant therefore asserts that the term IRN-BRU is a coined, made-up term in use in Scotland (where both Parties are based) and elsewhere for at least 70 years and that the term has no dictionary or generic meaning unrelated to the Complainant's brand. As evidence of its goodwill and renown, the Complainant has provided a copy of its Annual Accounts, a number of press articles (including articles pre-dating the registration date of the Domain Name), screen captures of its social media websites and samples of a variety of print and television advertising in relation to its IRN-BRU brand.

The Complainant states that in an attempt to settle the matter amicably, the Complainant's agents wrote to the Respondent on November 3, 2015 and that the Respondent's solicitors replied on November 18, 2015. The Complainant's agents responded to the Respondent's solicitors on three further occasions, namely January 11, 2016, March 29, 2016 and May 17, 2016 offering to reimburse the Respondent's out of pocket costs relating to the registration and renewal of the Domain Name. The Complainant states that it did not receive a response from either the Respondent or his representatives and so it had no option but to bring the present Complaint.

The Complainant points out that the Respondent applied for a trade mark in the United Kingdom for the term IRN-BRU in class 15 for musical instruments (trade mark no. 3146911) on January 29, 2016 but withdrew it without explanation on June 23, 2016. The Complainant further asserts that an article was published in the Scottish Sun newspaper ("DidgeriBru: Dad's Horn Row With Ginger Giant", Scottish Sun, May 15, 2016) about the Respondent and his purported plan to develop an IRN-BRU "digeridoo". The Complainant asserts that the Respondent's alleged "digeridoo" business, as featured in the article, is not genuine and was merely designed to vex the Complainant.

The Complainant further notes that the Respondent has been party to at least one previous dispute under the UDRP, namely Billy Connolly v. Anthony Stewart, WIPO Case No. D2000-1549 (<billyconnolly.com> and <billyconnelly.com>), brought by the well-known Scottish comedian, actor and musician, and that in that case the panel found the disputed domain names were registered and used in bad faith, noting that: "…the Respondent's asking price [for the disputed domain names] of £7,500.00 is very considerably more than his out-of-pocket costs directly related to that name. Further, it is apparent that the Respondent is in the business of selling or leasing domain names generally, some of which incorporate the names / marks of third parties."

Turning to each of the requirements under the Policy, the Complainant asserts as follows:

(i) The Domain Name is identical to the Complainant's trade mark.

The Complainant asserts that the Domain Name is identical or confusingly similar to its IRN-BRU trade marks, as the ".com" generic Top-Level domain ("gTLD") can be disregarded for the purposes of comparison of a domain name to a mark. The Complainant states that its older trade mark pre-dates the registration of the Domain Name by 52 years.

(ii) The Respondent has no rights or legitimate interests in the Domain Name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. In this regard, the Complainant states that the Respondent is not a licensee nor has he been otherwise authorized by the Complainant to use its trade marks in relation to any goods or services.

The Complainant further asserts that there is no evidence that, before notice of the dispute, the Respondent had used, or had made any genuine, demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. In this regard, the Complainant contends that the Respondent does not operate and has no serious plans to operate a digeridoo-related business called "Irn-Bru", despite the Respondent's assertions in the Scottish Sun article, especially as the website associated with the Domain Name has, to the best of the Complainant's knowledge, always been inactive and is not connected with any business or other purpose. Furthermore, the Complainant underlines that the Respondent's solicitor's letter of November 18, 2015 makes no mention of any related business and instead notes, to the contrary, that "…our client has not used the domain name for commercial purposes. He has not set up any website…/…our client continues to have no intention of using the domain name commercially…".

The Complainant further states that if, despite the evidence to the contrary in his solicitor's letter, the Respondent did have a genuine, legitimate and bona fide "digeridoo" or other business in respect of the Domain Name (which is denied by the Complainant), he would have responded with evidence of this. Likewise, the Complainant emphasizes that if the Respondent's business were a bona fide enterprise then the Respondent should reasonably be able to provide verifiable evidence that demonstrably pre-dates the Complainant's first contact with the Respondent and indeed predates or is at least contemporaneous with the registration of the Domain Name. The Complainant argues that the limited evidence of the Respondent's claimed "digeridoo" business, namely the article in Scottish Sun, post-dates the initial contact by the Complainant and his solicitor's response by some six months (as the Complainant's first letter was sent in November 2015 while the article appeared in May 2016).

The Complainant also underlines the quotation from the Respondent in the Scottish Sun article, in which he says: "We could have sorted it out if Irn-Bru [sic.] had given me a call – I'd have allowed them it back". In this regard, the Complainant argues that the Respondent's statement is not consistent with that of a legitimate, bona fide business but more likely to be consistent with that of someone who has simply created an outlandish cover story to vex the Complainant, similar to his explanation in relation to the prior dispute proceeding against him.

The Complainant further asserts that should the Respondent put forward any other alternative reasons or explanation for holding the Domain Name, then this would be wholly inconsistent with his "digeridoo" explanation put forward in the article, which would be highly indicative that the Respondent is merely attempting to create a false air of legitimacy around his registration where none exists and indeed that neither explanation has any credibility.

The Complainant also argues that given the fame of and history of the Complainant's mark and product and that it is a fanciful, made-up term, there is no realistic use to which the Domain Name could be put which would confer a right or legitimate interest on the Respondent, as it would inevitably lead to confusion among users and the general public.

The Complainant further asserts that it has found no evidence that the Respondent has been commonly known as IRN-BRU prior to or after the registration of the Domain Name nor has the Respondent made any such claim in correspondence with the Complainant.

(iii) The Domain Name was registered and is being used in bad faith.

The Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant asserts that the Respondent does not appear to have used the Domain Name for web services for the duration of its registration, and as evidence has provided screen captures from the Internet Archive available at "www.archive.org" of April 2001. The Complainant also points out the Respondent's solicitor's letter of November 18, 2015 in which it is stated that the Respondent has "…not set up any website". The Complainant therefore contends that in the present matter there are "cumulative circumstances" which strongly indicate, on balance, that the Domain Name was more likely than not to have been registered and used in bad faith. The Complainant contends that taken together the following circumstances are highly indicative of registration and use in bad faith: the fame of its IRN-BRU trade mark, including its iconic status; the Respondent's prior conduct of registering other domain names relating to Scottish icons and offering them for sale in bad faith; the geographic proximity of the Respondent to the Complainant and its products (which shows that it is inconceivable that the Respondent could not have had the Complainant's IRN-BRU mark very firmly in mind when he registered the Domain Name); the Respondent's failure to put forward any reasonable, realistic or convincing explanation that demonstrates the Domain Name was not registered in bad faith. In this regard, the Complainant argues that the Respondent's "digeridoo" explanation has no credibility and directly contradicts the Respondent's solicitor's letter which sets out that the Respondent had not used the Domain Name for any commercial purpose. Finally, the Complainant argues that even if the Respondent did have a credible explanation (which is denied), the Respondent could not operate any business, enterprise or bona fide offering of goods or services – whether related to digeridoos or not – under the IRN-BRU name which could be considered a use in good faith, given the fame and history of the brand in Scotland and elsewhere.

The Complainant also contends that the circumstances surrounding the Domain Name's registration indicate that the Respondent registered it primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name, in terms of paragraph 4(b)(i) of the Policy. The Complainant argues that, as recognized in a prior decision against the Respondent, the Respondent "…is in the business of selling or leasing domain names generally, some of which incorporate the names / marks of third parties" (Billy Connolly v. Anthony Stewart, supra). Taken in this light, the Complainant avers that it is more likely than not that at the point of registration the Respondent intended to sell the Domain Name to the Complainant and that his registration was in bad faith. The Complainant argues that this contention is supported by the uniqueness of the Complainant's IRN-BRU brand and mark, in that there is no other party to whom the Respondent could have sold the Domain Name and that is has no value without direct reference to the Complainant's IRN-BRU mark.

Finally, the Complainant the Complainant argues that, the doctrine or defense of laches does not apply and that, in any event, both of the Parties are subject to the jurisdiction of Scots law, which does not incorporate the Anglo-American legal concept of laches per se but has its own common law test: mora, taciturnity and acquiescence, the essence of which is that mere delay is not sufficient grounds for rejection of a case.

B. Respondent

The Respondent asserts that he has never used the Domain Name in bad faith and has not commercialised it in any way. The Respondent explains that his original intention was to "set up an Internet fan site until I witnessed the after-effects that drinking irn-bru had on some children at a birthday party. The children went from normally behaved, having fun at the party, to become hyper-active and in some cases, out of control. Since then I have spoken to many parents and carers who will not allow their children to drink irn-bru because of the worrying effects they say it has on their children's behaviour". The Respondent provided an explanation, together with sample articles, about the possible ill-effects of the Complainant's product on human health.

The Respondent asserts that he did not instigate the story that was featured in the newspaper the Scottish Sun and that a news reporter and a photographer simply showed up uninvited at his door step one morning. The Respondent explains that he refused to discuss the matter of the Domain Name with the reporter and also refused to be photographed. The Respondent asserts that he also asked the reporter not to publicise any story about his affairs.

The Respondent further asserts that on January 17, 2007 he had a meeting held at the Complainant's head office with one of the Complainant's representative to discuss sports sponsorship and that the Respondent informed the Complainant that he had registered the Domain Name and would make it available to the Complainant. The Respondent states that the Complainant's representative said he would enquire if the Complainant would be interested in the Domain Name but that he was informed a few days later that the Complainant had no interest in the Domain Name as it already owned <irn-bru.co.uk>. The Respondent provides as evidence copy of an email with the Complainant's representative, in which the Respondent's signature appears as "Managing Director"of "147 Events Ltd".

The Respondent has also provided as evidence a copy of an email dated November 11, 2009 that the Respondent sent to the Complainant's representative in which the Respondent stated that "it was always been my intention to set up a fan site but I have never managed to get around to actually doing it... I have recently been approached by a company who have made an offer to purchase the names from me. My preference however would be to sell AG Barr the names for market value. Could you please let me know if you are interested in acquiring the names". In response, the Complainant's representative stated in an email dated November 12, 2009 that "While I appreciate that both domain names were registered with good intentions, … IRN-BRU is a registered UK and Community trade mark and unauthorized use and registration of IRN-BRU in a domain name amounts to infringement of AG Barr's intellectual property rights".

The Respondent explains that he registered the Domain Name on February 11, 1998, nearly two years after the Complainant registered the domain name <irn-bru.co.uk>. The Respondent argues that a fair-minded person would deduce from this fact that the Complainant had no interest in the Domain Name; otherwise the Complainant would have registered the Domain Name at the same time it registered <irn-bru.co.uk>.

The Respondent also suggests that when he registered the Domain Name he did not know from the product labelling that the IRN-BRU logo was protected because the registered trade mark symbol ® was omitted from alongside the IRN-BRU logo. To support his claim, the Respondent has submitted images of the Complainant's products showing that the IRN-BRU logos do not display the ® symbol as well as images of other well known world-wide brands of soft drinks showing the ® symbol alongside the brand name.

The Respondent states that he applied for a UK trade mark for IRN-BRU in class 15 (musical instruments) using the "Right Start Application" option. The Respondent further states that having received confirmation that his trade mark was eligible for registration, he then proceeded with the registration in good faith as the examiner offered no objection to prevent it continuing to the opposition stage of the application. The Respondent further explains that when he received notice from the Complainant's lawyers that there was a potential conflict with his registration under class 15 and the Complainant's trade mark, despite the fact that it was not afforded protection under class 15, he immediately withdrew the application. The Respondent argues that the Complainant's attempt to dispossess him of the Domain Name is nothing but a "cynical attempt by [the Complaint] to attract some much needed publicity for their product irn-bru whose sales are suffering a year on year decline (Annex seven)".

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.

Taking the aforementioned provisions into consideration, the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has provided evidence that it has registered trade mark rights in IRN-BRU in connection with soft drink beverages. The Panel is therefore satisfied that the Complainant has established relevant trade mark rights.

The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant's trade mark. The Domain Name incorporates the Complainant's IRN-BRU trade mark in its entirety. Prior panels deciding under the Policy have held that "when a domain name wholly incorporates a complainant's registered mark that is sufficient to establish identity or confusing similarity for purposes of the Policy". See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

It is accepted that the suffix ".com" is generally disregarded for the purposes of assessing identity or confusing similarity as it is a functional element. See paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

The Panel therefore finds that the Domain Name is identical to the Complainant's IRN-BRU trade mark. The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

A complainant is required to make a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name in question. If the respondent comes forward with some allegations or evidence of relevant rights or legitimate interests, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant. See paragraph 2.1 of the WIPO Overview 2.0.

The Complainant has asserted that the Respondent is not a licensee of the Complainant nor has he been otherwise authorised by the Complainant to make any use of its IRN-BRU trade marks, in a domain name or otherwise.

There is no evidence on record that, prior to any notice of this dispute, the Respondent had used, or had made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. The only evidence available is the Respondent's trade mark application in the term "irn-bru" in class 15 for musical instruments (filed on January 29, 2016), which was withdrawn further to the Complainant's opposition, and a newspaper article about the Respondent's purported digeridoo-related business published on May 15, 2016. However, such evidence post-dates the Complainant's cease and desist letter of November 3, 2015 and so it may not give rise to rights or legitimate interests in the Domain Name, in accordance with paragraph 4(c)(i) of the Policy, which requires evidence of demonstrable preparations to use a domain name "before any notice to you of the dispute".

The Respondent is not commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy.

Neither is the Respondent making a legitimate noncommercial or fair use of the Domain Name, in accordance with paragraph 4(c)(iii) of the Policy. In this regard, the Respondent has indicated that he originally intended to use the Domain Name to set up a fan site devoted to the Complainant's IRN-BRU product but that he then changed his mind upon discovering about the possible ill-effects of the Complainant's products, although in his 2009 communication to the Complainant he gave a different reason and stated that he simply "never managed to get around to actually doing it". Regardless of the Respondent's reasons for not setting up the fan site, the express language of the Policy indicates that paragraph 4(c)(iii) refers only to the active "making" of a "legitimate noncommercial or fair use". See Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000 (<bridgetjones.com>) ("while paragraph 4(c)(i) of the Policy refers to 'preparations to use' a domain name in the context of offering goods or services, paragraph 4(c)(iii) refers only to the active 'making' of a 'legitimate noncommercial or fair use'. The express language of the Policy indicates that its drafters intended to limit the circumstances in which legitimate noncommercial or fair use could successfully be claimed"). The Respondent in this case is not "making" (nor has the Respondent provided any evidence of preparations to make) an active, noncommercial use of the Domain Name, either for a fan or criticism site, as the Domain Name is not resolving and so the Respondent is also unable to rely on paragraph 4(c)(iii) of the Policy to justify a right or legitimate interest in the Domain Name.

The Complainant has made a prima facie case of the Respondent's lack of rights or legitimate interests in the Domain Name and the Respondent has failed to rebut such a showing.

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:

"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

As far as bad faith registration is concerned, the Complainant's IRN-BRU trade mark is highly distinctive and has no other meaning except in relation to the Complainant. Furthermore, the Complainant's registered trade mark rights in the term IRN-BRU predate the registration date of the Domain Name by 52 years, and have acquired considerable goodwill and renown worldwide, particularly in Scotland where both Parties are based. Under these circumstances, there is no question that the Respondent had knowledge of the Complainant at the time of registration. The Respondent's contention that the Complainant's product did not display the registered trade mark symbol ® does not assist the Respondent, as under the Policy what is relevant is that the Respondent had knowledge of the Complainant and that he was intending to profit from the Complainant's goodwill.

In this regard, the Panel is not persuaded by the Respondent's assertion that he registered the Domain Name with the intention of setting up a fan site as there are strong indications that he more likely than not registered the Domain Name to take advantage of the Complainant's rights. The Respondent has not made any active use of the Domain Name other than to offer the Domain Name for sale to the Complainant. The fact that the Respondent has provided inconsistent explanations as to why he has failed to set up the fan site does not assist his case. Neither does the Respondent's prior history of abusive domain name registrations of other iconic Scottish names (namely, Billy Connolly v. Anthony Stewart, supra (<billyconnolly.com> and <billyconnelly.com>).

Under these circumstances, the Panel finds that the Respondent's several attempts to sell the Domain Name directly to the Complainant is strong evidence that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of the trade mark, for valuable consideration in excess of his documented out-of-pocket costs directly related to the Domain Name, in accordance with paragraph 4(b)(i) of the Policy. See Helen Fielding v. Anthony Corbert aka Anthony Corbett, supra ("Respondent was demonstrably aware of Complainant's interests in the 'Bridget Jones' name and mark when he registered the disputed domain name. Respondent was (and is) aware of the commercial value of Complainant's mark as the means to distinguish Complainant's literary works and related products from those of other authors. Under these circumstances, it is reasonable to infer that Respondent registered the disputed domain name with the intention of selling it to Complainant for valuable consideration in excess of his out-of-pocket expenses directly related to the name. This constitutes bad faith within the meaning of paragraph 4(b)(i) of the Policy"). Whilst the practice of acquiring and selling domain names for profit is not in itself illegitimate, it is so when the domain name in question, as in the present case, is identical or confusingly similar to a trade mark and there is evidence that it was acquired for its trade mark value. See also Helen Fielding v. Anthony Corbert aka Anthony Corbett, supra.

The Panel also finds that the Respondent registered the Domain Name to prevent the Complainant from reflecting its trade mark in the ".com" extension, in accordance with paragraph 4(b)(ii) of the Policy, and that the Respondent has engaged in a pattern of such conduct, having been found to have made abusive registrations in connection with two other domain names (see Billy Connolly v. Anthony Stewart, supra). The Respondent's claim that the Complainant failed to register the Domain Name when it registered the domain name <irn-bru.co.uk> in 1996 does not of itself justify the Respondent's conduct.

As far as bad faith use is concerned, the Panel finds that the Respondent's passive holding of the Domain Name for 18 years amounts to bad faith use, given the overall circumstances of this case, in particular the nature of the Domain Name itself, which consists of an exact match of the Complainant's trade mark, the strength and renown of the Complainant's trade mark, the Respondent's prior history of abusive registrations and his offer to sell the Domain Name to the Complainant. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that the passive holding of a domain name can constitute bad faith in certain circumstances, particularly where the trade mark in question has a strong reputation and is widely known); see also paragraph 3.2 of the WIPO Overview 2.0.

Finally, the Panel finds that the Complainant's delay in bringing this Complaint does not prevent the Complainant from succeeding under the Policy, as UDRP panels have long recognized that the defence of laches does not generally apply under the Policy. See paragraph 4.10 of the WIPO Overview 2.0.

The Panel therefore finds that the Domain Name was registered and is being used in bad faith.

The Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <irn-bru.com>, be transferred to the Complainant.

David Taylor
Sole Panelist
Date: September 1, 2016